Federal Circuit Patent Updates - May 2009

Federal Circuit Patent Updates - May 2009

(Linn) Vacating judgment of noninfringement in light of an erroneously narrow claim construction. A "real time" claim limitation did not require "instantaneous" action but did require no "intentional delay." "Absent an express limitation to the contrary, any use of a device that meets all the limitations of an apparatus claim written in structural terms infringes that apparatus claim. ... Construing a non-functional term in an apparatus claim in a way that makes direct infringement turn on the use to which an accused apparatus is later put ... is inconsistent with the notice function central to the patent system."

(Rader) Affirming in part, but reversing holdings of estoppel to argue invalidity in light of a prior settlement agreement and extending a limited exclusion order to parties not named in the case. "A patentee's discussion of the shortcomings of certain techniques is not a disavowal of the use of those techniques in a manner consistent with the claimed invention."

(Lourie) Affirming dismissal of claims for breach of license agreement and infringement. In a patent license, '[t]he right to 'make, use, and sell' a product inherently includes the right to have it made by a third party, absent a clear indication of intent to the contrary."

(Schall) Affirming-, reversing-, and vacating-in-part and remanding issues of infringement and invalidity. Claim limitations of "second circuit" and "third circuit" did "not require entirely separate and distinct circuits," and a "second control signal" did not need to "be entirely distinct" from a "first control signal."

(Moore) Affirming dismissal for lack of personal jurisdiction. “Our holding in Avocent was that only enforcement or defense efforts related to the patent rather than the patentee’s own commercialization efforts are to be considered for establishing specific personal jurisdiction in a declaratory judgment action against the patentee.” Also, the “district court did not abuse its discretion by denying jurisdictional discovery.” Newman dissented.

(Rader) Affirming summary judgment of noninfringement and denial of a preliminary injunction. In an en banc portion of the opinion, holding that product-by-process claims are limited by their process terms. Three judges dissented.

(Ward) Affirming denial of preliminary injunction. “An appellant carries a heavier burden when seeking to reverse the denial of a preliminary injunction than seeking to reverse the grant of a preliminary injunction.” The district court’s preliminary finding that defendants raised a substantial question of invalidity was not clearly erroneous. Newman concurred.

(Huff) Affirming judgment that patent directed to the active ingredient in an osteoporosis drug is not invalid. The claimed compound and a prior art compound are positional isomers, they each contain the same atoms arranged in different ways. The district court’s findings indicated though “that there was no reasonable expectation in 1985 that [the claimed compound] would be a successful compound.” Also, the “only direct evidence that the structural modification [required to make the claimed compound] was routine was presented by an expert witness that the district court judge discredited.” The patent was also not invalid for double patenting.

(Moore) Affirming rejection for obviousness-type double patenting. The examiner rejected claims under the one-way test but agreed the claims would have survived under the two-way test. “[T]he applicant is entitled to the narrow exception of the two-way test when the PTO is at fault for the delay that causes the improvement patent to issue prior to the basic patent.” Substantial evidence supported the Board’s finding that the applicant, not the PTO, was responsible for the delay. In a footnote, the Court noted that neither party challenged the PTO rule that a reference can be used for an obviousness-type double patenting rejection even if it shares only a common inventor with the application rather than an identical inventive entity. The Court stated that the “opinion should not be read to decide or endorse the PTO’s view on this issue.”

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